Intellectual Property Expert Guide 2023: Increasing Complexity of Managing IP
23rd May 2023
In 2019, following a cancellation action filed by Supermac’s (Holdings) Ltd (‘Supermac’s’), the European Union Intellectual Property Office (EUIPO) revoked McDonald’s International Property Company Ltd (‘McDonald’s’)’s EU trademark (EUTM) for BIGMAC on the ground of non-use. McDonald’s appealed this decision and, in December 2022, the Board of Appeal of the EUIPO partially annulled the contested decision and allowed the BIG MAC mark in relation to some of the goods and services covered(Case R 543/2019-4).
In the 1960s an Irish teenager called Pat McDonagh earned the nickname ‘Supermac’ for his exploits in Gaelic football. Pat went on to open a restaurant called Supermac’s in 1978 and there are now over 100 Supermac's across Ireland and Northern Ireland.
In 2017 McDonald’s opposed two EUTM applications for SUPERMAC’S, arguing likelihood of confusion with its BIG MAC mark. Supermac’s responded by filing a non-use revocation application against McDonald’s BIG MAC EUTM (No 62638), which dated back to 1996 and covered the following:
“Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.
Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar.
Class 42: Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.”
To prove use, McDonald's filed three affidavits from representatives of McDonald's companies in Germany, France and the United Kingdom claiming significant sales figures in relation to 'Big Mac' sandwiches for the relevant period. It also exhibited:
The Cancellation Division of the EUIPO held that the evidence submitted was insufficient to establish genuine use of the mark. It contended that there was a lack of data attesting to the extent of McDonald’s genuine commercial use of the mark. It took the view that the evidence submitted did not give enough detail regarding sales figures, numbers of orders taken via a website, nor website traffic and where that traffic originated from. It further held that affidavits from trademark owners or their employees do have some probative value, but are given less weight than independent evidence. In short, the EUIPO was critical of the evidence submitted by McDonald's, stating as follows:
“The methods and means of proving genuine use are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted.”
Consequently, the EUIPO revoked the BIG MAC mark in its entirety.
Appeal by McDonald’s
McDonald’s appealed this decision in March 2019 and submitted additional evidence to prove the extent of use of its BIG MAC mark in Germany, France and the United Kingdom (‘the said markets’). This included:
It also provided evidence of marketing efforts, with advertisements, social media accounts, promotional YouTube videos and articles from reputed UK newspapers and websites.
The Board of Appeal addressed Supermac’s objections to the admissibility of the additional evidence filed by McDonald’s by citing Article 27(4) of the EU Trademark Delegated Regulation (2017/1430), which allows the Board of Appeal to accept facts or evidence submitted for the first time before it only where such evidence is, on the face of it, likely to be relevant to the outcome of the case and the evidence was not provided in due time for valid reasons, particularly where they are merely supplementing facts and evidence which were already submitted in due time.
Findings of the Board of Appeal
The Board of Appeal concluded that there was sufficient evidence to show that the Big Mac is the flagship burger of McDonald’s fast-food chain and an emblematic sandwich sold globally (citing, in particular, the Big Mac Index).
In partially annulling the decision of the Cancellation Division, the Board of Appeal has now allowed the BIG MAC EUTM for the following:
“Class 29: Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches.
Class 30: Edible sandwiches, meat sandwiches, chicken sandwiches.
Class 42: Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods.”
Interestingly, the board observed that the evidence submitted by McDonald’s demonstrated that the BIG MAC mark was not only used to identify a specific sandwich, but also to promote the food provider. McDonald’s had successfully proven that the Big Mac sandwich cannot be bought in any other restaurants than at the EUTM proprietor’s establishments - thus distinguishing the restaurant services provided by McDonald’s from those of its competitors. However, this did not extend to “franchising services”, which were contained in the BIG MAC EUTM specifications.
It is safe to assume that all the adjudicators in the Cancellation Division, as well as the Board of Appeal, were personally familiar with the BIG MAC brand - such is its indisputable reputation. However, this case provides a timely reminder of the importance of supplying sufficient and suitable evidence when defending a mark against a non-use revocation challenge before the EUIPO - even one as well known as the BIG MAC mark. Whilst rights owners may be cautious about sharing commercially-sensitive data, particularly when this information will be revealed to a competitor - failing to submit proper evidence of sales, turnover or web traffic data can ultimately result in the loss of their trademark. It also reinforces the importance of independent, third-party evidence, which carries significant weight before the EUIPO.
This article first appeared in WTR Daily, part of World Trademark Review, in February 2023. For further information, please go to www.worldtrademarkreview.com.
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